United States Magistrate Judge Stewart D. Aaron (S.D.N.Y.) recently granted a motion by Samsung Electronics Co. Ltd and Samsung Electronics America, Inc. (collectively “Samsung”) to compel non-party Microchip Technology Incorporated (“Microchip”) to “produce documents and to testify at a deposition” “pursuant to Rule 45 of the Federal Rules of Civil Procedure.” Op. at 1. The subpoenas were “issued in an action pending in the U.S. District Court for the Eastern District of Texas . . . Polaris PowerLED Technologies, LLC v. Samsung Electronics Co., Ltd., Samsung Electronics America, Inc. and Samsung Display Co., Ltd., No. 2:22-CV-00469 (JRG).” Id.
In the underlying action, Polaris PowerLED Tech. v. Samsung Elecs et al., plaintiff Polaris PowerLED alleged Samsung infringed three patents, two of which “relate to electronic displays” while the third relates “to a method for adjusting delivery of current in a connection based on temperature.” Id. at 2. Samsung served Microchip with a subpoena seeking both documents and a deposition. After several months of negotiations, “Microchip objected to Samsung’s expanded request for technical documents and stated that it would not search for responsive documents for [several products].” Id. at 6. Microchip also “objected to all of Samsung’s deposition topics,” and stated “that it was willing to provide an affidavit regarding the authenticity of the documents in its production and that it did not believe that a deposition was necessary.” Id. Samsung moved to compel.
The Court granted “Samsung’s motion insofar as it seeks to compel Microchip to produce the technical documents and information that Samsung sought regarding the 15 LED drivers identified” by Samsung as being relevant to its marking defense. Id. at 9. The Court found that “the documents and information are relevant, and Microchip does not contend otherwise,” “Samsung has established a need for the documents and information to establish the Marking Defense,” “the documents sought are not broad in scope,” “the time period covered (i.e., from December 2016 to December 2022) is not overly broad, and “the documents sought have been described with particularity.” Id. at 9-10. The Court further noted that the “turnover in the legal team at Microchip, and the greater ‘difficult[y]’ confronted by Microchip ‘to track down information for old products of an acquired company’ . . . do not, in the Court’s view, create an undue burden on Microchip.” Id. at 10. The Court further noted that “the in-house attorney who left Microchip, now is working at a law firm in Austin, Texas and Microchip can contact him, as needed.” Id. at 10. It further explained that “mere assertion that tracking down information and documents will be more difficult is not enough to show that the burden is undue” and “Microchip d[id] not contend that the requested production is likely to be voluminous or that the expense of production would impose an undue burden.” Id. For those reasons, the Court found “that Microchip has not met its burden to show that the document discovery sought by Samsung is unduly burdensome.” Id. However, the Court concluded that “Samsung does not have a need for any [] testimony from Microchip” other than “a witness to authenticate the documents that Microchip has produced…” Id.
The case is Samsung Elecs. Co., Ltd. v. Microchip Tech. Inc., No. 1:24-mc-00269 (GHW) (SDA) (S.D.N.Y. Aug. 23, 2024).
